As some Washington Commanders fans push for a name change amid the team’s pending sale from Daniel Snyder to Josh Harris, the U.S. Patent and Trademark Office (USPTO) has given the franchise a reason to come up with a new moniker: The trademark applications for “Washington Commanders” have been refused.
On May 18, a USPTO trademark attorney issued “nonfinal office actions” explaining why the agency has not (yet) approved the applications.
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A “nonfinal” action is what it sounds like—the USPTO has identified a potential legal problem in the applications, and the team now has a few months to respond. If the team is deemed to have sufficiently addressed and rectified the problem, the applications will move toward approval and will take another step towards trademark registration.
There are a couple of issues with the applications, as first reported by trademark attorney Josh Gerben.
The first problem is an alleged likelihood of confusion between the Washington Commanders and the Commanders’ Classic, an annual college football game between Army and Air Force that has been played for more than 50 years. Last year the game was held in Arlington, Texas.
“[Each problematic mark] shares the term ‘Commanders’ or its possessive as its dominant element and uses this wording in connection with related goods and services,” the USPTO said. “[These marks] may be confusingly similar in appearance where similar terms appear in the compared marks and create a similar overall commercial impression.”
Both the NFL team and the military academies also use “Commanders” in the context of clothing and apparel “in connection with football competitions,” which means some of the goods “are legally identical.”
In an interview, trademark law expert Alexandra Roberts explained what could be confusing. “The public could think that the Washington Commanders are associated with the Commanders’ Classic, or that Washington Commanders apparel comes from the owners of the Commanders’ Classic marks, or that a Commanders’ Classic event is put on by the Washington Commanders,” she said.
Roberts, a Northeastern University law professor and author of “Athlete Trademarks: Names, Nicknames, & Catchphrases” essay in the Handbook of American Sports Law, added “any of these possibilities would justify refusing the NFL team’s application to register their marks.”
In a response, the Commanders could argue that football fans, and more broadly consumers, know and appreciate the difference between an NFL franchise and a single, annual game played by two college teams from military academies. The more the Commanders can distinguish its product and services from the Commanders’ Classic, the more persuasively they can assert the level of confusion is negligible.
Roberts forecasted several trademark strategies for the Commanders to address the Commanders’ Classic issue, and she doesn’t expect the team to back down from a fight.
“While the services are related—both marks are used in connection with football games—the marks share only one word, and each includes another word, so there’s a case to be made that consumers” would probably not have difficulty distinguishing them, Roberts predicted. She also suggested the Commanders might “negotiate a consent agreement” with the owners of the Classic. “The NFL team could agree to certain limitations, like promising to avoid using the word ‘classic’ in connection with any events or items,” she said. Although a consent agreement isn’t determinative, she added, “it can help persuade the USPTO that the registrations can coexist.”
Another problem is the Commanders’ application was preceded by two arguably similar applications: Washington Space Commanders and Washington Wolf Commanders. Both were filed by a D.C. area actuary named Martin McCaulay, who in recent years also applied to register Bravehearts, Washington Bravehearts, Washington Redtails and dozens of other names Snyder could have picked to replace Washington Redskins and later Washington Football Team. McCaulay has publicly indicated he won’t stand in the way of the team gaining trademark registration, though it’s unclear if expects payment from the team.
“There are solid arguments available here refuting the likelihood of confusion,” Roberts said, including that “wolf” and “space” are “salient aspects of the mark that will decrease the possibility of confusion.” She also pointed out the Commanders might assert McCaulay “doesn’t truly possess a bona fide intent to use these marks in commerce as source indicators for shirts” though cautioned he has until next year to file a statement of use. Roberts anticipated the team will likely “want to negotiate with [McCaulay] to explicitly abandon” the applications so they don’t hinder the Commanders’ registration process.
Trademark registration is valuable to any business, especially sports teams. It carries a presumption of ownership and the exclusive right to use the mark, which is key in infringement cases. Registration also brings anti-counterfeit protections from U.S. Customs and Border Protection.
On the other hand, no business is entirely dependent on federal trademark registration for trademark protection. State laws, court decisions and licensing contracts can all furnish potential legal avenues in the event a team’s name and logo are being copied without consent. Yet registration is generally regarded as the most robust form of protection, and the Commanders, assuming they keep that name, will want it.